Untimely Filing of Petitions under
37 CFR 1.181(a) to
Withdraw Holdings of Abandonment
Summary: The United States Patent and Trademark Office
(USPTO) receives petitions under 37 CFR 1.181(a) to withdraw holdings
of abandonment (based on non-receipt of an Office action, or upon
non-receipt or loss of a reply by the applicant). Some of these
petitions are filed years after the application is held abandoned,
causing extensive prosecution delays. To prevent these delays from
inappropriately extending the term of any patent issued from the
application, the USPTO is clarifying its position concerning the
treatment of petitions to withdraw holdings of abandonment that are not
timely filed because the applicant failed to exercise reasonable
diligence in monitoring the status of the application. The USPTO
strongly encourages practitioners and applicants to use the USPTO's
Patent Application Information and Retrieval (PAIR) system (private
side) to monitor the status of the patent applications that they are
prosecuting.
The Manual of Patent Examining Procedure (MPEP) will be revised
for consistency with this notice in due course.
Treatment of Untimely Petitions to Withdraw Holding of Abandonment:
Utility and Plant Applications Filed on or after May 29, 2000
The term of a patent issuing from a utility or plant
application filed on or after June 8, 1995 ends on the date that is
twenty years from the filing date of the application, or the earliest
filing date for which a benefit is claimed under 35 U.S.C. 120, 121,
or 365(c). Utility and plant applications filed on or after May 29,
2000, however, are eligible for patent term adjustment under the
American Inventors Protection Act of 1999 (AIPA). Therefore, if a
petition to withdraw a holding of abandonment is not filed within two
months from the mailing date of the notice of abandonment, any patent
term adjustment will be reduced under the provisions of 37 CFR
1.704(c)(4). If applicant does not receive the notice of abandonment,
any patent term adjustment may be reduced under the provisions of 37
CFR 1.704(a) by a period equal to the period of time during which the
applicant "failed to engage in reasonable efforts to conclude
prosecution" (processing or examination) of the application, in which
case any period of adjustment shall be reduced by the number of days,
if any, beginning on the day after the date that is twelve months from
the date of applicant's filing or submission of correspondence with the
USPTO for which further action by the USPTO can reasonably be expected
and ending on the filing date of a grantable petition to withdraw the
holding of abandonment.
Utility and Plant Applications Filed on or after June 8, 1995 but
before May 29, 2000
As discussed above, the term of a patent issuing from a utility
or plant application filed on or after June 8, 1995 ends on the date
that is twenty years from the filing date of the application, or the
earliest filing date for which a benefit is claimed under 35 U.S.C.
120, 121, or 365(c). Utility and plant applications filed on or after
June 8, 1995, but before May 29, 2000, however, are eligible for patent
term extension under the Uruguay Round Agreements Act (URAA). The URAA
provides for patent term extension only if issuance of the patent was
delayed due to: (1) an interference proceeding; (2) imposition of a
secrecy order; or (3) successful appellate review. See 35
U.S.C. 154(b) (1994). Unless an application is held abandoned during
one of these three periods, the untimely filing of a petition to
withdraw a holding of abandonment will not operate to extend the term
of the patent because the USPTO has no authority to grant patent term
extension under the URAA for other administrative delays. If a petition
to withdraw a holding of abandonment is not filed within two months
from the mailing date of the notice of abandonment during a period of
appellate review, any patent term extension accrued under 37 CFR
1.701(a)(3) (extension due to successful appellate review) may be
reduced under the "due diligence" provisions of 37 CFR 1.701(d)(2).
Design Applications, Utility Applications Filed Before June 8, 1995,
and Plant Applications Filed Before June 8, 1995
(A) Applicant Receives Notice of Abandonment
In any utility or plant application filed before June 8, 1995,
and in any design application, if applicant receives a notice of
abandonment, any petition to withdraw the holding of abandonment that
is not filed within two months of the mail date of the notice of
abandonment will not (absent extraordinary circumstances) be
treated on its merits unless accompanied by a terminal
disclaimer under 37 CFR 1.321(a), and the required fee set forth in 37
CFR 1.20(d). The period to be disclaimed is the terminal part of the
term of any patent granted on the application, or of any patent granted
on any utility or plant application that claims the benefit of the
filing date of the application under 35 U.S.C. 120, 121, or 365(c),
equivalent to the period between:
(1) the date that is two months after the mail date of the
notice of abandonment; and
(2) the filing date of a grantable petition to withdraw the holding of
abandonment.
See MPEP 711.03(c). Form PTO/SB/62 is the appropriate terminal
disclaimer to be used.
(B) Applicant Does Not Receive Notice of Abandonment
In any utility or plant application filed before June 8, 1995,
and in any design application, if applicant never receives the notice
of abandonment, any petition to withdraw the holding of abandonment
that is not filed within twelve months from the date of applicant's
filing (or date of submission, if the correspondence was never received
by the USPTO) of correspondence with the USPTO for which further action
by the USPTO can reasonably be expected, will not (absent
extraordinary circumstances) be treated on its merits unless
accompanied by a terminal disclaimer under 37 CFR 1.321(a), and
the required fee set forth in 37 CFR 1.20(d). The period to be
disclaimed is the terminal part of the term of any patent granted
thereon, or of any patent granted on any utility or plant application
that claims the benefit of the filing date of the application under 35
U.S.C. 120, 121, or 365(c), equivalent to the period between:
(1) the date that is twelve months from the date of applicant's
filing or submission of correspondence with the USPTO, for which
further action by the USPTO can reasonably be expected; and
(2) the filing date of a grantable petition to withdraw the holding of
abandonment.
Form PTO/SB/62 is again the appropriate terminal disclaimer to
be used.
Provisional Applications, Reissue Applications and
Reexamination Proceedings
Provisional patent applications are not provided for in this
notice because these applications become abandoned within one year of
filing. Reissue patent applications and reexamination proceedings not
provided for in this notice because delays in filing a petition will
not operate to extend the term of the patent.
Petitions to Revive under 37 CFR 1.137 (a) and (b)
A petition under 37 CFR 1.137 submitted in either a utility or
a plant patent application filed before June 8, 1995, or submitted in a
design application, is subject to the terminal disclaimer requirement
of 37 CFR 1.137(d).
Proof of Non-Receipt of Office Action, or Proof of Filing or Submission
of Reply, is Also Required
If the petition is based upon non-receipt of an Office action,
the petition must be accompanied by a convincing showing that
establishes non-receipt of the action. See MPEP 711.03(c),
subsection II. If the petition is based upon the timely filing (and
subsequent loss) of a reply to the Office action, the petition must be
accompanied by a convincing showing that establishes the timely filing
of the reply. See MPEP 503. If the petition is based upon
the timely submission under 37 CFR 1.8 or 1.10 of a reply to the Office
action (which was not received or was lost by the USPTO), the petition
must be accompanied by a convincing showing that establishes the timely
submission of the reply under 37 CFR 1.8 or 1.10. See MPEP 512 and 513.
Access to Private PAIR Should Be Used by Practitioners and Applicants to
Monitor Status of Pending Applications
To avoid a reduction of patent term extension or adjustment, or
to avoid being required to file a terminal disclaimer, as a result of
the untimely filing of a petition to withdraw a holding of abandonment,
the USPTO strongly encourages practitioners and applicants to exercise
due diligence in monitoring the status of the patent applications that
they are prosecuting. MPEP 203.08 provides, in part, that:
Amended applications are expected to be taken up by the
examiner and an action completed within two months of the date the
examiner receives the application. Accordingly, a status inquiry is not
in order after reply by the attorney until 5 or 6 months have elapsed
with no response from the Office.
Obviously, a status inquiry is in order once six months have
elapsed with no response from the USPTO.
The USPTO makes the status of patent applications available
within the private side of the PAIR system. Private PAIR
(http://www.pair.uspto.gov) provides customers with direct
secure access to their own patent application status information, as
well as to general patent and patent application information that is
publicly available. Private PAIR also permits access to the electronic
images of all documents that are part of the official record of the
patent application, and that are stored with the USPTO's Image File
Wrapper (IFW). For example, after the USPTO mails a rejection (either
final or non-final), or notice of allowance, the electronic image of
the Office action would be viewable 24 hours a day, seven days a week
via the USPTO's IFW system. Use of the automated system will reduce the
effort needed to monitor the status of applications under examination.
The USPTO strongly urges practitioners (and applicants not represented
by a practitioner) who do not already have access to the USPTO's
private PAIR, and the USPTO's IFW system, to do the following:
1. Obtain a no-cost USPTO Public Key Infrastructure (PKI) digital
certificate,
2. Obtain a USPTO customer number,
3. Associate all of their pending and new patent application filings
with their customer number,
4. Install no-cost software (supplied by the USPTO) required to access
the USPTO's Private PAIR, and
5. Make appropriate arrangements for Internet access.
The full instructions for obtaining a PKI digital certificate
are available at the USPTO's Electronic Business Center (EBC) web page
at: http://www.uspto.gov/ebc/downloads.html. Note that a
notarized signature will be required to obtain a digital certificate.
To obtain a Customer Number, download and complete the Customer
Number Request form, PTO-SB125, at:
http://www.uspto.gov/web/forms/sb0125.pdf. The completed
form can then be transmitted by facsimile to the Electronic Business
Center at (703) 308-2840, or mailed to the address on the form. If you
are a registered attorney or patent agent, then your registration
number must be associated with your customer number. This is
accomplished by adding your registration number to the Customer Number
Request form.
A description of associating a customer number with an
application is described at the EBC web page at:
http://www.uspto.gov/ebc/registration_pair.html.
Since practitioners and pro se applicants can monitor the status of
their applications using the USPTO's PAIR and IFW systems, the failure
to receive a notice of abandonment (or any other USPTO notification) will
not excuse an unreasonable delay in filing a petition to withdraw the
holding of abandonment.
Who to Contact for Further Information
Technical information on the operation of the USPTO's IFW
system can be found on the USPTO website at
http://www.uspto.gov/web/patents/ifw/index.html. Questions
concerning the operation of the USPTO's PAIR system should be directed
to the EBC at the USPTO at (866) 217-9197. The EBC may also be
contacted by facsimile at (703) 308-2840 or by e-mail at EBC@uspto.gov.
Legal inquiries relating to the terminal disclaimer requirement
should be directed to Cynthia L. Nessler, Legal Advisor, Office of
Patent Legal Administration, by telephone at (703) 305-0271, and by
e-mail at patentpractice@uspto.gov.
STEPHEN G. KUNIN
Deputy Commissioner for
Patent Examination Policy